Suppose that you have an invention disclosure for a design of an article that you want to protect?  When you review the invention disclosure, you notice that the design is ornamental, for example a pattern, on an article such as a chair.  You draft and file a design patent application on the pattern described as applied to a chair, but you do not include any drawings showing the pattern applied to the chair.  Subsequently, you obtain the design patent and later find out that a third party is making baskets including the pattern.  Can you enforce your design patent against the alleged infringer?  The answer is NO because your design patent is limited in scope to a chair.

For a design patent, 35 U.S.C. § 171  refers, not to the design of an article, but to the design for an article, and is inclusive of ornamental designs of all kinds including surface ornamentation as well as configuration of goods.” In re Zahn, 617 F.2d 261, 204 U.S.P.Q. 988 (C.C.P.A. 1980).  The subject matter which is claimed is the design embodied in or applied to an article of manufacture (or portion thereof) and not the article itself. Ex parte Cady, 1916 C.D. 62, 232 O.G. 621 (Comm’r Pat. 1916).

Under 37 C.F.R. § 1.154, a design patent application includes a specification and drawings.  The specification includes a preamble, stating the name of the applicant, title of the design, and a brief description of the nature and intended use of the article in which the design is embodied, description of the figure or figures of the drawing, and a single claim.

Because the invention disclosure in the above example is for a pattern on a chair, how should you draft the design patent application?  For the design patent application, should you describe the invention as a pattern for a chair or something broader such as furniture?  Should your design patent application include drawings showing the pattern applied to a chair?

For the title in a design patent application, 37 C.F.R. § 1.153(a) states:

(a) The title of the design must designate the particular article. No description, other than a reference to the drawing, is ordinarily required. The claim shall be in formal terms to the ornamental design for the article (specifying name) as shown, or as shown and described. More than one claim is neither required nor permitted.

Thus, the title of the design must designate the particular article.  For the above example, the particular article is a chair, which is a particular type of furniture.  Should you use a broad description of the article such as furniture or a more narrow description of the article such as a chair?  Should you include drawings of the pattern applied to furniture, a chair, or both?

In a recent case, Curver Luxembourg, SARL v. Home Expressions Inc., No. 2018-2214, (Fed. Cir. Sept. 12, 2019), Curver Luxembourg, SARL (Curver) asserted U.S. Design Patent No. D677,946 (’946 patent), entitled “Pattern for a Chair” and claimed an “ornamental design for a pattern for a chair” against  Home Expressions Inc. (Home Expressions).  For the ‘946 patent, Curver originally applied for a design patent directed to a pattern (Y design) for “furniture,” not a chair specifically. The design patent application was directed to a “design for a furniture part,” but none of the figures illustrated a chair, any furniture, or any furniture part.  During prosecution of the design patent application, Curver adopted the examiner’s suggestion, replacing the original title with “Pattern for a Chair” and replacing “furniture part” with “pattern for a chair” in the claim and figure descriptions to be consistent with the amendment to the title.

Subsequently, Curver sought to enforce the ‘946 patent against Home Expressions for making and selling baskets that incorporated Curver’s claimed design pattern. At the district court, Home Expressions successfully argued that its accused baskets did not infringe the ‘946 patent because the ‘946 patent was limited to chairs.  On appeal, the Court of Appeals for the Federal Circuit (CAFC) considered the issue of whether the district court correctly construed the scope of the ‘946 patent as limited to the illustrated pattern applied to a chair, or whether the ‘946 patent covers any article, chair or not, with the surface ornamentation applied to it.

The CAFC applied the “ordinary observer” test to determine whether the baskets of Home Expressions infringed the ‘946 patent based on “in the eye of an ordinary observer . . . two designs are substantially the same,” such that “the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other . . . .” Gorham Co. v. White, 81 U.S. 511, 528 (1871) (articulating the “ordinary observer” test for design patent infringement); Egyptian Goddess, Inc. v. Swisa, Inc., 543 F.3d 665, 672 (Fed. Cir. 2008) (en banc) (making the “ordinary observer” test in Gorham the sole test for determining design patent infringement).   The CAFC agreed with the district court that the scope of the ’946 patent is limited to the design pattern illustrated in the patent figures as applied to a chair, explaining that “[t]he scope of a design patent is limited to the ‘article of manufacture’—i.e., the product—listed in the patent.”  The CAFC also agreed with the district court that an ordinary observer would not purchase Home Expressions’ basket with the ornamental “Y” design believing that the purchase was for an ornamental “Y” design applied to a chair, as protected by the ’946 patent.

Could the outcome of the above case be different if the ‘946 patent was a pattern for furniture and not a pattern for a chair?  The answer would be NO because a basket is not furniture and a basket embodying a particular ornamental pattern is not substantially similar in appearance to furniture embodying that same pattern such that the former would infringe a design patent covering the latter.

For enforcement of a design patent, infringement depends on whether the claim language specifying an article of manufacture limits the scope of the design patent such as in the case where the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.  In a design patent application, the design for an article is the visual appearance or characteristics embodied in or applied to the article.  Since the subject matter of a design is its appearance, the design patent application may relate to the configuration or shape of the article, to the surface ornamentation applied to the article, or to the combination of configuration and surface ornamentation.  Thus, a design patent application must be directed to a particular article and the figures of the article of manufacture would have aided in the construing the scope of the design patent.

For practice tips, it is recommended that you use the genus of the article in the title, drawings, description of the figures, and claim for the claimed invention.  By using the genus of the article, the design patent application may be construed to apply to several particular articles.  Another practice tip is to draft the design patent application to include a genus and species of the article with drawings to both.  If the Examiner objects or tries to restrict the application, you could either delete the species or file a divisional design patent application directed to the species.  Because both the genus and species are included in the design patent application, the scope of the genus may not be limited to the species.

To avoid a design patent being limited in enforcement, you should make sure that the title, figure descriptions, and claim are directed to an article of manufacture that is broadly defined including drawings for illustrating the design and the article of manufacture.  If no drawings of the article of manufacture are included in your design patent application, the scope of the design patent may be limited by amendments made to the design patent application that direct the title, figure descriptions, and claim to a particular article of manufacture.  To avoid such a situation, you should include a sufficient number of figures that show the design applied to the article of manufacture.  Therefore, using these tips, you may avoid limiting enforcement of your design patent against an infringer.

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